Patent Law Updates | New Proposed Legislation
March 14, 2011
Patent Reform Bill Now in the Hands of House after Transmittal by Senate
America Invents Act
S. 23, 3/8/2011
The Patent Reform Act, now named the America Invents Act, is now in the hands of the House of Representatives after the Senate passed the proposed legislation by a vote of 95 to 5 on March 8, 2011. The next day, the Senate transmitted the bill to the House for its consideration.
The House however has yet to place the bill in its calendar.
Key changes established by the legislation include:
- Providing the USPTO the resources it needs to more effectively manage its operations and begin to reduce the significant patent application backlog.
- Establishing a “first-inventor-to-file” system, which is a much more efficient way to determine which inventor receives a patent on an invention. This would align the US with the rest of the world, which is important for any businesses that must operate in the increasingly global economy. It also would help with the USPTO’s efforts to speed examination by taking advantage of work done by other patent offices.
- Establishing a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor
- Revising provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
- Offering third parties the opportunity to submit information relevant to the patent application to examiners with commentary. This strengthens patents by ensuring examiners have access to often difficult to access information and helps determine which aspects of a patent application are truly novel and deserving of a patent.
- Setting forth a damages determination procedure that requires the court or jury to consider only court-identified methodologies and factors
- Authorizing the court to increase damages up to three times (treble damages) the amount found or assessed (inapplicable to specified royalties for provisional rights to inventions claimed in published applications)
- Allowing any party to request that the trier of fact decide infringement and validity questions before the issues of damages and willful infringement are tried (commonly referred to as sequencing or bifurcation)
- Revising specified defenses and evidentiary requirements, including a bar on using an accused infringer’s failure to obtain the advice of counsel to prove that any infringement was willful or induced
- Replacing the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board)
- Allowing a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the USPTO to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications
- Limiting the filing of petitions for post-grant review to the nine-month period beginning after the grant of patent or issuance of a reissue patent
- Requiring any petition for inter partes review to be filed after the later of: (1) nine months after the grant or reissue, or (2) the date of termination of a post-grant review
- Disallowing both forms of review if the petitioner (or real party in interest or privy) has filed: (1) a related civil action, or (2) the petition more than six months after being served with a complaint alleging infringement
- Prohibiting the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews (in the case of post-grant review, prohibits only raised claims from ITC proceedings and civil actions) that resulted in a final Board decision
- Prohibiting the USPTO Director (Director) from authorizing: (1) inter partes review unless information in the petition and any response shows a reasonable likelihood that the petitioner would prevail on at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications
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